Owner of a registered design does not lose his right simply because he did not enforce it against all infringers: Delhi High Court


The Delhi High Court has said that the owner of a registered design does not lose his right just because he has not enforced the same against all infringers.

The design holder retains the right to prohibit infringement of the registered design even if it has not sued some of the infringers, the court said.

“It is not uncommon for small players to copy designs, which have become popular. It is not necessary for the owner of a design to pursue legal action against every dealer/manufacturer selling counterfeit products. It is possible that the benefits of prosecuting an individual offender may not be commensurate with the cost and effort required to do so,” he added.

The division bench of Judge Vibhu Bakhru and Judge Amit Mahajan added that it is understandable for a design owner to weigh their option, including on the basis of commercial considerations.

“A design owner is not required to pursue available remedies against all infringers in order to exercise its remedies against certain infringers. It is open to the design owner to select the infringers against whom it wants to sue. The rights of an owner of a registered design are not diluted simply because there are multiple infringers,” the court said.

The court made the observations in its judgment on the appeal lodged by Relaxo Shoes Limited against the judgment of a single bank which had rejected its request for interim measures in May 2019, and granted the request filed by its competitor Aqualite in annulment of an ex parte summary order of 14.12.2018.

Relaxo and Aqualite are famous shoe brands. Relaxo in 2018 filed a lawsuit accusing Aqualite of violating its slipper design. Relaxo argued that the design is new and unique, especially in the surface pattern, cuts, edges and curves.

Single-bench decision

The Single Tribunal, in its judgment, said that the market research conducted by the parties pursuant to its order indicated that there were third-party products available on the market, which were similar to the design of the object.

The court also said that Relaxo claimed novelty with regard to the color combination and the location of the label indicating the maximum retail price (MRP), but its application for registration of the design in question did not include no such novelty claims.

He had also taken note of the letter dated 18.01.2019 sent by a Chinese manufacturer indicating that the shoe strap in the design of the subject had been introduced to the market seven or eight years ago and had become very popular since the year 2016.

Thus, the court had ruled the design as common to the trade.

Division Bench Decision

The divisional bench headed by Judge Bakhru in its decision on the appeal said that it is obvious that the design of Aqualite’s products is almost identical to the design of the subject.

The court noted at the outset that the single bench could not have OUA motorcycle asked the parties to carry out a market study.

“Furthermore, we are also not persuaded to accept that the results of the market research were relevant to answering the controversy before the learned single judge. The market research would indicate, at best, that the products were available on the market. It would not establish that the subject design lacked novelty and originality at the time of its registration,” the court said.

The court stated that it is unable to accept that a conclusion that the object model lacks novelty and originality could have been drawn on the basis of market research without any evidence as to the when said products were introduced to the markets by their respective sellers. It necessarily had to be determined by reference to the date of registration of the design of the object, the court said.

The court also said that the letter stating that the bracelet had been introduced to the market seven to eight years ago would be of no assistance in reaching the prima facie conclusion regarding the design of the object, because Relaxo did not had not claimed novelty in the design of the bracelet. .

“Relaxo had claimed novelty in shape, configuration, and surface pattern, as shown in the images of the model at issue. Relaxo had claimed no novelty with respect to the strap of the shoe. The model in question states a surface pattern consisting of four parallel stripes on one half of the top surface. The central stripe runs down the center of the surface with three other stripes on one side. In addition, there is a white stripe running across a groove in the center of the vertical surface of the shoe. Whether the subject design is new or original should be ascertained by determining whether it was published or available in the public domain prior to registration,” the court said.

He further noted that Aqualite had also claimed that a product bearing a similar design was available on Amazon and therefore said design was available in the public domain prior to the Subject Design’s registration.

“A prima facie view of said products does not indicate that the design of said product is identical to the object design. A simple view of the image of the product, as available, indicates that the configuration is not similar. The top surface of the slippers seems to be rough with a grainy pattern; the sole is ventilated by several holes; the strap is completely different; and the upper surface only has two stripes in the center. It also does not seem that the vertical surface has any stitches. central groove or stripe,” the court said.

The court added that it would also be essential for Aqualite to establish that the said product was available for sale prior to the registration of the Design Object. “Aqualite relies on an opinion from one of the customers dated 25.05.2017, so it was necessary to also consider the probative value of said material,” he said.

On Single Bench’s conclusion that the design in question is common to the trade, the court explained that a mark, which is common to the trade, cannot serve as a mark.

“Indeed, it would not fulfill the primary function of the mark as a source identifier for the product. However, this concept would have no application when examining the infringement of a design. Under the terms of the 2(d) of the Designs Act, by definition a design does not include a trade mark.If a product of a particular design is available before registration, that would suffice to make it unable to register on the grounds that it is not original or new.

The court explained that under section 4 of the Designs Act, for a design to be registered it must be original and new; not disclosed in any way prior to entry; and it must be distinctly different from a known design or a combination of known designs.

“Thus, a mere commercial variant, which is a combination of known designs, would not be entitled to protection under the provisions of the Designs Act,” he said.

However, the division’s bench said that the market research conducted by the parties would not answer the question of whether the design of the object was original or new at the time of registration, nor would it help to determine whether the design of the object differed significantly from designs known at the time of registration. subject design registration.

Aqualite had argued that the design in question was only a commercial variant and had relied on the decision of the coordinating bench of this Court in Crocs Inc Usa v Bata India Ltd & Ors where it said shoe manufacturers have little slack in creating new designs.

However, the court said: “There are no doubt constraints when it comes to shoe design. Shoe designers have to operate under given constraints, however, the decision in Crocs Inc Usa v. Bata India Ltd & Ors. (above) cannot be interpreted to mean that there cannot be a registrable design for shoes simply because they are fitted to the shape of the foot. If the creative activities of shoe designers lead them to express themselves in new patterns that are merely discernible, there is no reason to assume that those patterns would not be recordable.”

The court said it was not persuaded to accept that Aqualite produced enough evidence to conclude that the model in question is only a commercial variant and that it is indistinguishable from models known or a combination thereof.

“The finding of the Single Learned Judge is not based on findings that the subject design is indistinguishable from designs that were known at the time of registration. It is based on the prima facie opinion that it There are currently products with similar designs available on the market, so the Single Judge’s ‘prima facie’ conclusion is unfounded,” he added.

Allowing the appeal, the court declared that Acqualite, its directors, principal officers and servants are prohibited from manufacturing, selling, offering for sale, advertising, importing, exporting or otherwise another way to deal with products violating the design of the object (design number 294938) until the elimination of the costume.


Citation: 2022 LiveLaw (Del) 1017

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